DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, and 5 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,912,369 to Reeves (hereinafter referred to as Reeves), as further evidenced by DE 102018126333 to Pekny et al. (hereinafter referred to as Pekny).
In regard to claim 1, as shown in figure 1, Reeves discloses a filter structure (10) having a filter layer (12) that has air permeability to filter passing gas. An adhesive layer (28) is formed of an adhesive on at least a part of one side of the filter layer (12). The template (14) forms a peelable sheet layer laminated on a surface of the adhesive layer (28). The template (14) can be considered to define to-be-cut regions set on the filter layer with the lines (18, 20, 22, 24) forming boundary portions that can indicate a boundary position between the to-be-cut region and a non-cut region of the filter layer (12). The lines can be considered to be a graphic or a symbol. Reeves does not disclose a boundary portion formed by a printed graphic, character, or symbol on the filter layer. The inclusion of a printed graphic, character, or symbol on the filter layer is considered a mere aesthetic design change. As evidenced by Pekny (see the third paragraph on page 3 of the machine translation), there are well known printing techniques that can be used to form a visual indication on filter medium. Further, the inclusion of the lines of the template on the filter layer surface opposite of the template can allow a user to see where to cut even if the filter is flipped and/or if the template is already removed.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Reeves to further include the lines of the template printed on the filter layer as this represents a mere aesthetic design change that can allow a user to user to see the template from both sides of the filter.
In regard to claim 3, the filter layer (12) has a square shape, which is a rectangular form. The lines “22” can be considered to form the boundary region, in which case the to-be-cut region can be set in at least one corner of the filter layer (12). In modified Reeves, the lines “22” are also formed on the filter layer, as discussed above.
In regard to claim 5, as discussed above, in modified Reeves the lines of the template are also formed on the filter layer as the boundary portion. As shown in figure 1, the filter layer comprises a first outline having a size of an entirety of the filter layer, and one or more second outlines smaller than the first outline, a specific corner portion of each of the first outline and the one or more second outlines meets one vertex of the first outline, first outline and the one or more second outlines have similar shapes, and the boundary portion can be formed on the first outline and the one or more second outlines.
In regard to claim 6, as discussed above, in modified Reeves the lines of the template are also formed on the filter layer as the boundary portion. As shown in figure 1, the filter layer comprises a first outline having a size of an entirety of the filter layer, and one or more second outlines smaller than the first outline, centers of the first outline and the one or more second outlines coincide with each other and are placed concentrically, the first outline and the one or more second outlines have similar shapes, and the boundary portion can be formed on the first outline and the one or more second outlines.
In regard to claim 7, as discussed above, in modified Reeves the lines of the template are also formed on the filter layer as the boundary portion. As shown in figure 1, the boundary portion includes a plurality of first boundary portions parallel to one direction of an outline of the filer layer, and a plurality of second boundary portions parallel to another direction perpendicular to the one direction of the outline of the filer layer, and only at four corners of the filter layer, the plurality of first boundary portions cross the plurality of second boundary portions to have lattice-shaped regions. Additionally, in regard to claims 5 – 7, for the sake of argument, even if Reeves is not considered to disclose a template with lines forming a boundary portion as described in these claims, the shape of the visual indication forming the boundary portion is considered a mere aesthetic design change. As discussed in MPEP 2144.04(I), it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. The shape of the visual indication is only considered to be ornamentation and does not affect how the filter functions. Thus, it would further be considered to have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Reeves to form a boundary layer with a visual indication as described in claims 5, 6, or 7 as this represent a mere aesthetic design change that does not affect the mechanical function of the filter.
In regard to claim 8, the to-be-cut region can be considered to be formed at a position corresponding to a portion of a target object to which the filter layer can be attached, with the portion of the target object interfering with the filter layer.
Response to Arguments
Applicant's arguments filed April 4, 2026 have been fully considered but they are not persuasive.
The examiner agrees that Reeves does not specifically disclose a boundary portion with a visual indication formed by printing on the filter layer. The examiner agrees that Reeves forms a visual indication only on the template (14) layer. The examiner, however, respectfully disagrees that forming a visual indication by printing on the filter layer is patentable over the prior art, see the rejection above. Firstly, the inclusion of a printed graphic, character, or symbol on the filter layer is considered a mere aesthetic design change that does not affect the mechanical function of the filter. Further, the inclusion of the lines of the template on the filter layer surface opposite of the template are considered to be beneficial to allow a user to see where to cut even if the filter is flipped and/or if the template is already removed. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Reeves to further include the lines of the template printed on the filter layer as this represents a mere aesthetic design change that can allow a user to user to see the template from both sides of the filter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
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